Federal Trademark Protection For Marijuana Business Brand Names

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One big question people are asking at the moment is do I need a federal trademark protection for Marijuana brand names if I am looking to set up a marijuana-related business.

With the increased legalization of marijuana for medicinal, as well as recreational, use across 23 states and the District of Columbia, it comes as no surprise that cannabis is becoming big business.

By 2019, it’s estimated that the marijuana industry could reach annual revenues exceeding $11 billion. There’s even a term for it, canna-business.

The rapid growth of the medical and recreational cannabis industry has resulted in a wide variety of businesses directly and indirectly related to the sale, support, distribution and consumption of marijuana.

Also not surprising is that canna-businesses have as much interest in protecting their trademarks as the companies next door selling clothing and cosmetics. From brand names for new strains (Bio-Diesel or Beast Mode anyone?) to dispensary names, there is no difference in the purpose and drive behind intellectual property protection for marijuana-related businesses than for more conventional industries. Except there is, and it’s called the Controlled Substances Act (CSA), 21 U.S.C. §§801-971, which bars federal trademark registration for certain marijuana-related goods and services.

So Can You Trademark Your Marijuana Business Name?

Trademarks serve as unique identifiers in the marketplace. They distinguish the goods and services of one entity from those of another and assist consumers in the marketplace with purchasing decisions.

As a business owner, you want to ensure that the name you choose for your product or services is different than someone else’s name so as to avoid any confusion as to the source of those goods or services, and you don’t want anyone else to use your trademark name. That’s easy enough.

However, the CSA prohibits, among other things, manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana and marijuana-based preparations.

The CSA also makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia, i.e., “any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under [the CSA].” 21 U.S.C. §863.

Since one of the key elements for trademark registration is the requirement to show use “in commerce,” the USPTO has consistently refused to register marijuana-related trademarks that may fall into any of the above-prohibited uses under the CSA.

Current Options For Trademark Protection of Marijuana Business Names

So what does this mean for canna-businesses? In short, the USPTO has been steadfast in its refusal of any trademarks that smell like marijuana (pun intended).

If your mark contains any reference to marijuana, cannabis, mary-jane, hashish, ganja or any other colloquial expression for the green stuff, or is proposed for use in connection with marijuana-related goods or services, red flags go up and the USPTO will likely issue an Office Action refusal requesting more information.

Due to the current language of the CSA, the USPTO will not permit registration of any product containing even trace elements of tetrahyrdocannabinol (THC).

So your weed strains, dispensaries, pot brownies, canna-butter and marijuana-infused lip balm are all currently outside the realm of federal trademark registration. However, if you own or operate a canna-business that doesn’t manufacture or distribute actual marijuana or THC, then you should be in the clear.

One way to potentially obtain federal trademark protection may be to highlight the non-weed related aspects of your business. If you own a “grow shop,” you can describe your retail services that have nothing to do with marijuana in particular – bulbs, soil, clippers, etc.

Smoking articles not necessarily used only for marijuana – pipes, papers, vaporizers, for example, are also acceptable. So are support services – consulting, chambers of commerce, etc. As long as they do not specifically reference “for use in connection with marijuana,” you may get the green light.

But if your trademark name is a dead giveaway, don’t be surprised if the USPTO requests additional information anyway on the nature of your goods and/or services.

State Trademark Registration May Be Available

Another option to obtain trademark protection may be to seek state registration, depending on your state’s applicable law. Several states permit trademark registration for weed-related businesses that may be otherwise prohibited under federal law. Please check the rules that may apply in your state.

State trademarks, like common law usage, provide limited protection on a national level however. Common law use of a trademark name provides limited protection in the geographic areas where you can show established prior use. State trademarks protect you only in that state.

If you register your marijuana business name in Washington, you would not be protected against potential competitors in Florida or Texas. But a state registered trademark does afford some modicum of protection, and while not as effective as federal trademark registration, it’s better than simply relying on common law use rights.

The foregoing information, like all of our newsletter content, is not intended to be legal advice and should not be relied upon without further advice of counsel. Please consult an attorney regarding your specific legal concerns.

If you have any questions on protecting your marijuana business trademark name, please contact us for a complimentary consultation, (800) 769-7790, or via email, info(at) flatfeetrademark.com. We’re always happy to hear from you!

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